22 F. 94 -

22 F1d 94

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Case Text

94

FEDERAL REPORTER.

hefora the words "to ascertain and take," the words, "(the solicitors for the respective parties having in open court consented to the appointment of said Shields as such master, although he is the chief deputy clerk of this court, and the court now determining that such consent is I:t sufficient special reason for such appointment.t The same disposition is made of the application in the case against Neil.

Bi>ILL

v.

CELLULOID MANUF'G Co.

(Uircuit Court, S. D. New York.

L

November 7,1884.)

PATENT FOR INVENTION-SUPPLEMENTAL BILL AFTER DECREE OF DISMISl!ALNEWLy-DISCOVERED .l!:vIDENCE-DILIGENCE.

After a decree has been rendered dismissing plaintiff's bill, a petition for leave to file a supplemental bill, in the nature of a bill of review, on the Jlround of thc discovery of new matter of consequence, must show that the petitioner could not, with reasonRble diligence. have obtained, prior to the former hearing, the testimony which he seeks to introduce, and that such matter is material. Demurrer to petition sustained.

In Equity. H. M. Ruggles and E. M. Felt, for plaintiff. F. H. Betts andE. L. Hamilton, for defendant. BLA.TCHFORD, Justice. Since the announcement of the decision of the court in this case, on the twenty-first of August, 1884, (21 FED. REP. 631,) Q.ismissing the bill of complaint, and before the entering of any formal decree to that effect, the plaintiff has made a motion for leave to file a supplemental bill of complaint in the nature of a bill of review. The motion is founded on a petition which purports to be the petition of the plaintiff by his solicitor, and is not signed or sworn to by the plaintiff, or any agent or attorney in fact of his, but is signed and sworn to by the solicitor, and is supplemented by an affidavit made by the solicitor, stating that the reason why the petition was not signed and verified by the plaintiff was because the plaintiff is in Europe, and has been there for several years last past, and for the further reason that the facts 'and statements set forth in the petition are within the knowledge of the solicitor. The petition sets forth that since the decision of August 21, 1884, the petitioner has discovered new matter of consequence in the cause; particularly, that John W. Hyatt, Jr., and David Blake obtained letters patent of the United States, No. 89,582, on the fourth of May, 1869, a printed copy of the specification of which is annexed to the petition; that the defendant, as assignee of I. Smith Hyatt and John W. Hyatt, (who is the same person who is called John W. Hyatt, Jr., in No. 89,582,) obtained letters patent of the United States, No. 156,352, on the twenty-seventh pf October, 1874, a printed copy of the

SPILL

v.

CELLULOID IUNUI"a

ao.

95

J-.

specification of which is. annexed to the petition; tha.t it appears by No. 89,582, that, in making compounds containing soluble guncotton, the gun-cotton is dissolved "in a mixture of equal parts of alcohol and ether," thereby showing that alcohol alone is not a solvent of soluble gun-cotton; that it appears by No. 156,352, that the object of the alleged invention "is to overcome certain objections which are involved in the use of liquid solvents as ordinarily employed in the manufacture of solidified collodion" or celluloid; that the specification says: "Heretofore, liquid solvents have been used in dissolving pyroxyline by first preparing the solvent,-for instance, ether and alcohol, nitro-benzole, etc.,-and then saturating the pyroxyline with the solvents;" that it also says: "Our present improvement consists in transforming pyroxyline into solidified collodion or 'celluloid' (see trade-mark No. 1,102, registered January 14, 1873) by using a liquid instead of a solid solvent, which liquid solvent, like the solid, is latent at ordinary temperatures, but becomes active and dissolves the pyroxyline upon the application of heat. The following is a description of our improved process: We make a weak solution of camphor in alcohol, the proportions being, by weight, one part of camphor to eight parts of alcohol. This solution of camphor is nota solvent of pyroxyline at ordinary temperatures, and we therefore term it a latent liquid solvent, but it becomes an active solvent at an elevated temperature. There being differences, however, in the solubilityof different grades of pyroxyline, a corresponding change in the strength of the solution of camphor becomes necessary, which may readily be determined by experiment;" that the claims of No. 156,352 are: "(1) The process herein described of manufacturing solidified collodion by mixing pyroxyline with a latent liquid solvent, which becomes active only upon the application of heat, as and for the purposes set forth. (2) In the manufacture of solidified collodion, the process of making a homogeneous mass by mixing pyroxyline with one (1) part of camphor and eight (8) parts of alcohol, whil'h forms a solvent will remain latent at ordinary temperatures, and becomes active upon the application of heat, substantially as described;" that the plaintitf. understanding from the opinion of the court filed in May, 1880, (18 Blatchf. 190; S. U. 2 FED. REP·.,707,) that it had been satisfactorily established by the evidence in the cause, that, in the art to which the invention of the plaintiff, as set forth in his patent No. 97,454, relates, alcohol is not a solvent of pyroxyline, and was not an ordinary volatile solvent of soluble gun-cotton, and that the evidence had been carefully considered, and the prior patents adduced and examined were the patent to Cutting, No. 1,638, of 1854, "in which the gun-cotton is said to be washed in strong alcohol before it is dissolved in a mixture of ten parts of ether and six parts of alcohol, and also all the patents of Parkes, did not suppose that it was necessary he should make further search for evidence to establish the fact that alcohol alone and camphor. alone are not solvents, at ordinar: tem-

98

J'BDBBAL BlDPOBTllla.

peratures, of the soluble pyroxyline whioh is suitable for use in compounds containing xyloidine; that, therefore, be did not pursue the search, in the patent-office and elsewhere, for evidence upon that point, but since the hearing in July, 1884, of the defendant's motion, which resulted in the decision of August 21, 1884, he has caused an examination of patents to be made, and has found the before-named patents, containing statements as to solvents of pyroxyline, made by parties connected with the defendant; that, taken in connection with the proofs in the cause as they stood at the final hearing, this evidence establishes the fact that alcohol was not, at the date of either of Parkes' patents, a solvent of the pyroxyline useful in the arts, was not one of the "ordi.nary volatile solvents" spoken of by Parkes, and would not dissolve pyroxyline; that the materiality of such evidence consists in showing that alcohol and ether are neither alone solvents, and that alcohol, even when mixed with one-eighth of its weight of camphor, does not become a solvent; that the same word, "alcohol," is employed in all these patents to designate the same substance, namely, that substance derived from grain and fruits by distillation, and ·which is not known to chemists or any persons as a sOlvent of any useful form of pyroxyline; that, if that was true, when the defendant said, in 1874, taat a weak solution of camphor, of one part, by weight, of camphor, and eight parts, by weight, of alcohol, is not a solvent of the pyroxyline used in making solid collodion, it was equally true in 1865, and prior to that date, when the art was in its infancy; that such statement of fact is an admission of record by the defendant of a material fact in the cause; and that the plaintiff should have the benefit of the same, and of the other patent referred to, as evidence in his behalf. The prayer of the petition is for leave to file a supplemental bill in the nature of a bill of review. To this petition the defendant interposed a demurrer, assigning for cause (1) that it does not appear by the petition that the petitioner could not, with reasonable diligence, have discovered tie alleged new of this matters set forth therein prior to the hearing and case, and could not have duly presented the same to the attention of the court at a prior stage of the case; (2) that it does not appear, by inRpection of the petition, and of the copies of the specifi. cations thereto annead, that the alleged new matter is in any way material or controlling upon the merits of this case; (3) that the peor by anyone authorized to act tition is not verified by the for him in that behalf, but by a solicitor only; (4) that the petition does not disclose any matter of equity whereon or wherebY the lJrayer of the petition should be granted. 1. The first cause of demurrer is well assigned. The cases of Smith v. Babcock, 3 Sumn. 583; Baker v. Whiting, 1 Story, 218; Walden v. Bodley, 14 Pet. 156; India-rubber Gomb Go. v. Phelps, 8 Blatchf. 85; Hitchcock v. Tremaine, 9 Blatchf. 550; Prevost v. Gratz, Pet. O. 0 .·364; Livingston v. Hubbs, 3 Johns. Ch. 124; Ruggles v. Eddy,

SPILL V. CELLULOID MANOE'Q CO.

97

l1-Blatchf. 524; Webster Loom Go. v. Higgins, 13 Blatch£. 349; De Florez v-. Raynolds, 17 BIatchf. 436; and Page v. Holmes Burglar Alarm Tel. 00. 18 BIatchf. 118, are authorities holding that, in a petition like the present one, it must be shown that the petitioner could not, with reasonable diligence, have obtained, prior to the former hearing, the testimony which he now seeks to adduce. All that the present petition avers in that connection is, that the new matter has been discovered since the last 'decision; and that the plaintiff un. derstood it to have been satisfactorily established, from the opinion of the court on the first decision, (which was one sustaining the plain. tiff's patent, while the last decision dL,missed the bill on the merits,) that "alcohol is not a solvent of pyroxyline, and was not an ordinary volatile solvent of soluble gun-cotton," and did not suppose it was necessary he should make further search to establish the fact "that alcohol alone and camphor alone are not solvents, at ordinary temperatures, of the soluble pyroxyline which is suitable for use in corn· pounds containing xyloidine;" and that, therefore, he did not "pur. sue the search for evidence upon that point in the patent-office and elsewhere," but had done so since the last hearing, and had found the two patents referred to. This is an insufficient showing, under the cases above cited. 2. The new matter is J.lot material. In the first decision,it was said, as to camphor and alcohol, that "neither alone is a solvent of xyloidine." This is not a statement made in the specification of the plaintiff's patent. The claim of that patent covers eight different consolvents of xyloidine, of which the use of camphor and jointly is one. As to all of the solvents claimed, the specification says, that the "invention relates to the preparation and use of certain solvents of xyloidine, and which differ from the ordinary or known solvents of xyloidine, in that these menstrua which are employed are not, necessarily, in themselves, solvents of xyloidine, but become so by the addition of the bodies, compounds, or substances herein referred to." This statement, as applied to alcohol, is a statement that alcohol may be or may not be, in itself, a solvent of xyloidine, but that it is unimportant whether it is or is not, the invention being the compound or mixture or joint action of camphor and alcohol. Therefore, it was said, in the last decision, that "whether either alone is or is not a solvent of xyloidine is of no importance." The patent covers a combination of camphor and alcohol. The infringement in, question is a use of that combination. The anticipating description to be looked for is a description of the use of that combination. Parkes, in No. 2,359, said that he dissolved gun-cotton in alcohol. It is sufficient that he said he, did, whether he did or not. In No. 2,675 he said that he distilled alcohol over chloride of calcium, and used it as a solvent of gun-cotton. It is sufficient that he said he did, whether he did or not. In No. 1,313 he says he takes the solvv.22F,no.I-7

98

FEDERAL

ent of No. 2,675, ancl moistens pyt'oxyline with it, and then aclds camphor. Alcohol distilled over chloride of calcium is olearly mentioned in No. 1,313 as an "ordinary solvent," and is "one of the ordinary volatile solvents" embraced in this statement in No. 1,313: "I also, according "to my invention, render the ordinary volatile solvents more suitable for use by the addition of camphor." Wbether alcohol so distilled was or is an ordinary solvent, or a solvent at all, by.itself, of pyroxyline, is of no importance, provided the description is that alcohol so distilled and camphor are conjointly used as a solvent of pyroxyline. Such is the description in No. 1,313. The ground is so fully gone over in the opinion on the last decision that it is not necessary to repeat here the views there announced. Moreover, the new evidence sought to be introduced is irrelevant to prove the point to which it is intended to be directed, namely, that alcohol alone or camphor alone was not, at the date of the plaintiff's patent, understood to be a solvent of pyroxylins; because, No. 89,582, though of a date earlier than the plaintiff's patent, shows nothing except that the patentee in it dissolves gun-cotton in a mixture of alcohol and ether; and No. 156,352 is of a date nearly five years later than the plaintiff's patent, and says no more than that ether and alcohol are a liquid solvent ordinarily employed in 1874 in dissolving pyroxyline, and that a weak solution of camphor in alcohol will not be an active solvent at ordinary temperatures. Without passing on any other points raised by the demurrer, it is sustained, and the petition is dismissed, with costs.

-

SORIVNER

and others v.

OAKLAND GAS

Co.

('.!iro'lit Oourt, D. Oalifornia. September 1,1884.)
L .

PATENTS FOR INVENTroNS-PROCESS-MECHANISM-REISSUE.

Where a patent is reissued 11 years after the issue of the original patent, which contained no claim Whatever for a process with claims enlarged so as to embrace a claim for the process, as we-.! as for the mechanical means by which the process is 'carried out, such reissue is void.

2.

SAME-PROCESS DISTINCT FROM MECHANISM.

A process is a very different thing from the mechanism by which it is carried out, and is II. different and distinct patentable invention.

In Equity. M. A. Wheaton and J. J. Scrivner, for complainant. John H. Boalt, for defendant. SAWYER, J., (orally.) This is a suit in equity upon a reissued patent. The patent was reissued 11 years after the date of the issue of the original patent, and it enlarges the claims of the patent very materially. The reissued patent embraces a claim for the process, as

SCRIVNER 'D. OAKLAND GAS 00.

.99

--.

...

well as for the mechanical means by which the process is carried out. The original patent contained no claim whatever for the process. Not only the claim is enlarged, but a whole page of desc:dptive matter as to the character of the process is inserted in the reiasue. and j.t is upon these new claims that this suit is prosecuted. In the case of James v. Campbell, 104 U. S. 857, it was h.eld that a process is a very different thing from the mf\chanism by wl:\ich it is carried out, and is a different and diHtinct patentable .invention. I am unable to take this case out of the rule laid dow::n in Miller v. Brass Co. 104 U. S. 350, which holds that after so long a period of time a patent cannot be enlarged by a reissue so as to embrace matters not within the original patent. When that'case was first decided I was uncertain how far the supreme court intended to go, but the court has affirmed it and reaffirmed it, I suppose, half a dozen times since, down to tile very last part of the present term of the court, showing that it was intended to hold rigidly to the strictest ru'.e laid down in that case. In some of the cases on1y five years had elapsed, but in this there were eleven. I am unable to take it out of the rule in that case without utterly disregarding the decisions of the supreme court. On the part of the complainants here it is Hought to take the case out of the rule cited on the principle stated in Morey v. Lockwood, 8 Wall. 240, and Russell v. Dodge, 93 U. S. 461. In Russell v. Dodge the patent was issued in 1869 and reissued in 1870, within a year. No such question as this is involved in that case. That patent was for tanning a certain kind of leather with hot fat, and it is nowhere intimated in the specifications of the patent or the claim that cold fat could or would perform the same offices and be equally practicable as hot fat; but it turned out that cold fat was as good as hot fat, or, at least, that it practically answered the same purpose, and the patentee thereupon applied for and afterwards obtained a reissue covering cold fat. The supreme court held the patent to be void as covering matters not suggested or indicated in the original specifications and patent, and said that it was not a case like Morey v. Lockwood, quoting a passage from the decision in the latter case, wherein the party who applied for the reissue had endeavored to obtain a patent for the whole invention in his original application, and the patent-office had refused to grant it to him, and compelled him to strike out of his original application and claim the parts which were afterwards inserted in the reissued patent, and for this reason it was the fault of the office that he did not get his patent for his entire invention. The question there was not as to the time within which the application for a reissue must be made, but related to the extent to which the patentee could go, under the circumstances, in inserting new matter. The court said, in Russell v. Dodge, that it is not a case like the former Ol1e of Morey v. Lockwood, and quote the passage referred to saying that, under the circumstances of this case, the rule adopted in

100

FEDERAL REPORTER.

the former would not authorize the patentee to broaden his claim, because he had not put it in his original application. It never was suggested that cold fat would answer the required purpose until it was stated in the amended specifications, on the application for a reissue, and it was therefore held that it did not come within the case of Morey v. Lockwood. That case was decided as far back as 8 Wall. The patentee in that case had applied originally for a broader claim, but be was compelled to cut it down, and take such as the patent.office was willing to grant him. Some years afterwards he applied again to the new commissioner, reinserting his originnl claim, and got his patent reissued covering it. The court said in that case it was not the patentee's fault. He did the best he could to obtain his patent, and a reissue was sustained; but there was no question then as to the time when the l;Lpplication must be made. It was long before this decision in the Brass Co. Case was announced. The decision in the Brass Co. Case has been recognized, by the bar, at least, as a departure from the rule that had theretofore obtained; so that that question never was raised in the case of Morey v. Lock· wood. Since the Brass Co. Case the question has been raised and decided, over and over again, that if a party fails to promptly pursue his right to a patent covering his whole invention he thereby aban· dons it to the public. Where the party examines the patent, and sees that it does not cover all he claims, he should apply promptly. It is claimed here that the party sought to get a broader patent in his original application. I am by no means certain that the original application is as broad as the present; but, conceding it to be so, it Beems to me it makes it, under the later decisions, a sttonger case against him, instead of a weaker one, because, not only by the read. ing of the patent could he see that his patent did not cover his whole invention, but he did, in fact, know that it was defective, because he Bought to obtain a broader patent and it was rejected; and, having been rejected, he not only had an opportunity of knowing by reading his patent, but he knew in fact, that he had not obtained as much as he claimed, and yet neglected to take any means, by appeal or otherwise, to enlarge his claim for 11 years. The case seems to me clearly within the rule laid down in the cases cited. I am, therefore, unable to take it out of these cases, and I must hold the patent void in those points in which it was claimed to be infring(;d; and the bill must therefore be dismissed.